To: | BAKER HUGHES HOLDINGS LLC (dallastrademarks@bakermckenzie.com) |
Subject: | U.S. Trademark Application Serial No. 88643061 - 50654608 |
Sent: | November 30, 2020 05:53:34 PM |
Sent As: | ecom104@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88643061
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Correspondence Address: 1900 N. PEARL STREET, SUITE 1500
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Applicant: BAKER HUGHES HOLDINGS LLC
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Reference/Docket No. 50654608
Correspondence Email Address: |
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Issue date: November 30, 2020
Notice of Incomplete Response to a Final Office Action – Additional Time Granted
Deadline for responding to this notice. To avoid partial abandonment of this application, the USPTO must receive one or both of the following submissions within the stated timeframe.
(1) File a complete response to the outstanding issues listed below that the USPTO receives within (1) thirty days of the issue date above, or (2) the time remaining in the six-month period for responding to the previous Office action, whichever is longer; and/or
(2) File a notice of appeal that the Trademark Trial and Appeal Board receives within six months from the issue date of the previous final Office action. This notice of incomplete response does not extend the time for filing an appeal.
Applicant granted additional time to resolve outstanding issues. On October 29, 2020, applicant filed a timely request for reconsideration that did not resolve all the issues in the April 29, 2020, final Office action. Because applicant made a bona fide attempt to advance the examination of the application in the response in compliance with 37 C.F.R. §2.65(a)(2), applicant is being granted additional time to address the following refusals and/or requirements in the previous Office action:
• Requirement Regarding the Identification and Classification of Goods and Service
These refusal(s) and/or requirement(s) are maintained and continued. See TMEP §713.02.
The following refusal(s) and/or requirement(s) are satisfied:
• Requirement Regarding Color Claim and Mark Description
Requirement for Clarification of the Identification of Goods and Services
The wording “house mark for downhole tools for wellbore completion and production, namely, electrical, acoustic and optical monitoring devices for monitoring downhole properties and conditions of wellbore equipment, fluids, geological formations and reservoirs sold as components of oil, gas, and geothermal subterranean completion systems” must be clarified because it is too broad and could include goods in other international classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. In particular, this wording could encompass Class 09 monitoring devices.
The wording “House mark for well measurement, monitoring and treatment services in the oil and gas field” and “house mark for measurement, monitoring and treatment services of chemicals and petrochemicals” in the identification of goods for International Class 40 must be clarified because it is too broad and could include services in other international classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. In particular, this wording could encompass Class 42 measurement and monitoring services and Class 40 materials treatment services.
The following is an amended version of applicant’s identification of goods and/or services that complies with the above-mentioned clarification
requirements, with additions and alterations in bold type. The italicized wording includes additional guidance and suggestions and the wording appearing with a
strikethrough should be deleted.
Applicant may adopt the following identification of goods and/or services, if accurate:
CLASS 06 is definite
CLASS 07: House mark for machines, machine tools and machine parts for use in the oil and gas, geothermal, and subterranean drilling fields, namely, drilling and completions systems comprising directional drilling tools, frac balls, frac sleeves, frac plugs, frac darts, frac ball sets, liner hangers, and casing packers; flow control valves for controlling the flow of oil in pipelines being machines parts, flow regulators being machine parts, mandrels being machine parts, valves being machine parts, wellhead machines; hydraulic fracturing equipment, namely, fracturing pumps; cutting elements for drill bits being parts for drill bits for subsurface drilling, drill bits for subsurface rock and earth formation drilling spears; subsurface assemblies for use in geothermal, water, oil and gas wells used for the extraction of oil, gas or water, namely, {specify the nature of the goods, e.g., earth drilling machines} comprising sleeves, sliding sleeves, jetting assemblies, packers, activation devices, darts, latching mechanisms, balls, collets, and coiled tubing driven tools; house mark for overshot machines, grapple buckets and blades for making earth milling and drilling machines, and whipstocks; house mark for oilfield cementing and floating machines and machine tools, namely, float collars, float shoes, and guide shoes, casing scrapers and brushes being machine parts, setting tools for setting and operating downhole tools, perforating guns for perforating casing, liners and geological formations, each of the foregoing comprised of or primarily comprised of metallic parts used in oil and gas and geothermal well completion; house mark for downhole tools for wellbore completion and production, namely, parts for earth drilling machines being electrical, acoustic and optical monitoring devices for monitoring downhole properties and conditions of wellbore equipment, fluids, geological formations and reservoirs sold as integral components of oil, gas, and geothermal subterranean completion machines; house mark for artificial lift systems comprising power operated lifts and pumps for use in oil and gas wells and components therefor, namely, gas, mechanical and hydraulic lift systems with pumps including for use in wells and at wellsites; house mark for metallic and non-metallic rotatable drill bits, namely, polycrystalline diamond (PCD) compact drill bits, tricone roller cone bits, hybrid bits, coring bits and reamers as well as cutters therefor; house mark for turbines not being for land vehicles, machine compressors, valves being parts of machines, centrifugal pumps, and integral structural parts therefor
CLASS 09: House mark for measurement and control apparatus for use in the oil and gas field, namely, control valves for regulating the flow of gases and oils, flow meters,
sensors, detectors, indicators, analyzers, switches, calibrators, pressure controllers, temperature measuring instruments, temperature controlling instruments; house mark for measuring, detecting and
monitoring instruments for industrial applications, namely, control valves for regulating the flow of gases and oils, flow meters, sensors, detectors, indicators, analyzers, switches, calibrators,
pressure controllers, temperature measuring instruments, temperature controlling instruments; house mark for fluid analysis instruments, namely, {specify, e.g.,
instruments for the analysis of oil for industrial applications}; house mark for nondestructive testing equipment used in industrial applications, namely, {specify the common commercial name of the goods, e.g., electrical eddy current test equipment, electronic ultrasound flaw detectors} radiography, remote visual, ultrasound, eddy
current, predictive corrosion management applications; house mark for downloadable computer software for use in data collection, transmission, integration, visualization, analysis and storage
in the field of oil and gas; house mark for downloadable computer software for use in connection with a network of physical objects, devices, vehicles, and buildings which are embedded with
electronics, software, sensors and network connectivity all of which enable these objects, devices, vehicles, and buildings to collect and exchange and report data in the field of oil and gas; house
mark for downloadable software for use in measuring and analyzing data retrieved from oil and gas wells; house mark for electronic and telemetry instruments for use in the oil and gas industry,
namely, pulsers and pulse decoding technology, wired pipe technology, sensors, detectors, fluid analyzers, calibrators; house mark for measurement and control equipment for oil and gas, aerospace,
automotive, power and energy industries, namely, gas sensors for measuring gas concentration, gasometers
CLASS 17: House mark for non-metal flexible pipes and tubing; house mark for non-metal junctions not for metal pipes; all for use in the oil and gas industry
CLASS 37: House mark for consulting services in the field of oil and gas, namely, consultation in the field of offshore oil and gas facility construction; house mark for consulting services in the field of {specify the field of consultation, e.g., installation of carbon equipment, control systems, and machinery} for use incarbon capture and sequestration; house mark for technical consulting services relating to the installation of equipment, control systems, machinery, and facility construction, all in the oil and gas field; house mark for consulting services related to the design, installation and maintenance of turbines and compressors and related equipment in the oil, gas and industrial industries; house mark for {specify the nature of the services, e.g., consulting in the field of maintenance of measurement and inspection equipment for use} in the oil and gas, aerospace, automotive, chemical, power and energy industries; house mark for consulting in the maintenance of industrial control systems; house mark for oil and gas drilling and construction completion; house mark for consulting services in the field of oil and gas, namely, consulting in the field hydraulic fracturing of subsurface geologic formations and reservoirs to enhance well production; house mark for consulting services in the field of oil and gas, namely, consultation in the field of well drilling; house mark for drilling, steering, logging, and coring oil and gas wells
CLASS 40: House mark for well measurement, monitoring and treatment services in the oil and gas field; house mark for equipment treatment services in
the oil and gas field; house mark for measurement, monitoring and treatment services of chemicals and petrochemicals; house mark for compressor, turbine, and centrifugal
pump treatment services; house mark for consulting services in the field of oil and gas, namely, technical consulting in the field of oil and gas production and processing; house mark for the
production of oil and gas
CLASS 41 is definite
CLASS 42: House mark for oil and gas drilling, completion, production and testing services, namely, drilling and completing wells as well as testing
the functionality of apparatus and instruments in the nature of oil and gas equipment; house mark for the exploration and searching of oil and gas; house mark for providing industrial measurement and
control services; house mark for technical assessment, evaluation and optimization for turbine, compressor, centrifugal pump use in oil and gas and industrial applications; house mark for software as
a service (SAAS) services featuring software that combines autonomic computing and cognitive artificial intelligence engineering technology for use in the oil and gas industry; house mark for
software as a service (SAAS) services featuring software for use in collecting, analyzing, and delivering data and information to optimize performance in the industrial process, equipment and
production systems across the upstream, midstream and downstream segments of the oil and gas industry; house mark for engineering consultation services in the field of carbon capture and
sequestration; house mark for consulting services related to the design of turbines and compressors and related equipment in the oil, gas and industrial industries; house mark for measurement and
inspection services for quality control purposes in the oil and gas, aerospace, automotive, chemical, power and energy industries; house mark for design and IT integration
services for industrial control systems; house mark for well measurement and monitoring services for quality control in the oil and gas field; house mark for measurement and monitoring services for
quality control of chemicals and petrochemicals
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
PARTIAL ABANDONMENT ADVISORY
Failure to timely resolve the outstanding issues will result in partial abandonment of the application. The following goods and services will be held abandoned and deleted from the application:
CLASS 07: subsurface assemblies for use in geothermal, water, oil and gas wells used for the extraction of oil, gas or water comprising sleeves, sliding sleeves, jetting assemblies, packers, activation devices, darts, latching mechanisms, balls, collets, and coiled tubing driven tools; house mark for downhole tools for wellbore completion and production, namely, electrical, acoustic and optical monitoring devices for monitoring downhole properties and conditions of wellbore equipment, fluids, geological formations and reservoirs sold as components of oil, gas, and geothermal subterranean completion systems;
CLASS 09: house mark for fluid analysis instruments; house mark for nondestructive testing equipment used in industrial applications, namely, radiography, remote visual, ultrasound, eddy current, predictive corrosion management applications;
CLASS 17: House mark for non-metal flexible pipes and tubing; house mark for junctions not for metal pipes
CLASS 37: house mark for consulting services in the field of carbon capture and sequestration; house mark for measurement and inspection services in the oil and gas, aerospace, automotive, chemical, power and energy industries; house mark for consulting, design and commissioning and integration services for industrial control systems; house mark for consulting services in the field of oil and gas, namely, geologic formation and reservoir management consultation; house mark for consulting services in the field of oil and gas, namely, well planning consultation
CLASS 40: House mark for well measurement, monitoring and treatment services in the oil and gas field; house mark for measurement, monitoring and treatment services of chemicals and petrochemicals;
CLASS 42: House mark for oil and gas drilling, completion, production and testing services, namely, drilling and completing wells as well as testing the functionality of apparatus and instruments in the nature of oil and gas equipment
The application will then proceed with the following goods and services only:
CLASS 01: House mark for chemicals and chemical compositions for use in the oil and gas field; house mark for chemicals and chemical compositions for use in petrochemical and industrial applications
CLASS 06: House mark for subsea wellheads and related equipment, namely, subsea manifolds of metal for pipelines, subsea jumpers of metal, subsea metal pipe connectors, flowline connectors and tubes of metal for subsea pipelines; house mark for expandable metal tubular products, namely, sand screens, casing patches, and expandable liners and liner hangers; house mark for metal pipes, tubing and seals; house mark for junctions for metal pipes
CLASS 07: House mark for machines, machine tools and machine parts for use in the oil and gas, geothermal, and subterranean drilling fields, namely, drilling and completions systems comprising directional drilling tools, frac balls, frac sleeves, frac plugs, frac darts, frac ball sets, liner hangers, and casing packers; flow control valves for controlling the flow of oil in pipelines being machines parts, flow regulators being machine parts, mandrels being machine parts, valves being machine parts, wellhead machines; hydraulic fracturing equipment, namely, fracturing pumps; cutting elements for drill bits being parts for drill bits for subsurface drilling, drill bits for subsurface rock and earth formation drilling spears; house mark for overshot machines, grapple buckets and blades for making earth milling and drilling machines, and whipstocks; house mark for oilfield cementing and floating machines and machine tools, namely, float collars, float shoes, and guide shoes, casing scrapers and brushes being machine parts, setting tools for setting and operating downhole tools, perforating guns for perforating casing, liners and geological formations, each of the foregoing comprised of or primarily comprised of metallic parts used in oil and gas and geothermal well completion; house mark for artificial lift systems comprising power operated lifts and pumps for use in oil and gas wells and components therefor, namely, gas, mechanical and hydraulic lift systems with pumps including for use in wells and at wellsites; house mark for metallic and non-metallic rotatable drill bits, namely, polycrystalline diamond (PCD) compact drill bits, tricone roller cone bits, hybrid bits, coring bits and reamers as well as cutters therefor; house mark for turbines not being for land vehicles, machine compressors, valves being parts of machines, centrifugal pumps, and integral structural parts therefor
CLASS 09: House mark for measurement and control apparatus for use in the oil and gas field, namely, control valves for regulating the flow of gases and oils, flow meters, sensors, detectors, indicators, analyzers, switches, calibrators, pressure controllers, temperature measuring instruments, temperature controlling instruments; house mark for measuring, detecting and monitoring instruments for industrial applications, namely, control valves for regulating the flow of gases and oils, flow meters, sensors, detectors, indicators, analyzers, switches, calibrators, pressure controllers, temperature measuring instruments, temperature controlling instruments; house mark for downloadable computer software for use in data collection, transmission, integration, visualization, analysis and storage in the field of oil and gas; house mark for downloadable computer software for use in connection with a network of physical objects, devices, vehicles, and buildings which are embedded with electronics, software, sensors and network connectivity all of which enable these objects, devices, vehicles, and buildings to collect and exchange and report data in the field of oil and gas; house mark for downloadable software for use in measuring and analyzing data retrieved from oil and gas wells; house mark for electronic and telemetry instruments for use in the oil and gas industry, namely, pulsers and pulse decoding technology, wired pipe technology, sensors, detectors, fluid analyzers, calibrators; house mark for measurement and control equipment for oil and gas, aerospace, automotive, power and energy industries, namely, gas sensors for measuring gas concentration, gasometers
CLASS 37: House mark for consulting services in the field of oil and gas, namely, consultation in the field of offshore oil and gas facility construction; house mark for technical consulting services relating to the installation of equipment, control systems, machinery, and facility construction, all in the oil and gas field; house mark for consulting services related to the design, installation and maintenance of turbines and compressors and related equipment in the oil, gas and industrial industries; house mark for oil and gas drilling and construction completion; house mark for drilling, steering, logging, and coring oil and gas wells
CLASS 40: house mark for equipment treatment services in the oil and gas field; house mark for compressor, turbine, and centrifugal pump treatment services; house mark for consulting services in the field of oil and gas, namely, technical consulting in the field of oil and gas production and processing; house mark for the production of oil and gas
CLASS 41: House mark for educational services, namely, conducting classes, seminars, conferences, and workshops in the fields of oil and gas exploration; house mark for educational services, namely, training in the use and operation of turbines, compressors and centrifugal pumps; house mark for educational services, namely, training in the use and operation of monitoring, inspection, testing and control equipment
CLASS 42: house mark for the exploration and searching of oil and gas; house mark for providing industrial measurement and control services; house mark for technical assessment, evaluation and optimization for turbine, compressor, centrifugal pump use in oil and gas and industrial applications; house mark for software as a service (SAAS) services featuring software that combines autonomic computing and cognitive artificial intelligence engineering technology for use in the oil and gas industry; house mark for software as a service (SAAS) services featuring software for use in collecting, analyzing, and delivering data and information to optimize performance in the industrial process, equipment and production systems across the upstream, midstream and downstream segments of the oil and gas industry; house mark for engineering consultation services in the field of carbon capture and sequestration; house mark for consulting services related to the design of turbines and compressors and related equipment in the oil, gas and industrial industries; house mark for measurement and inspection services for quality control purposes in the oil and gas, aerospace, automotive, chemical, power and energy industries; house mark for design and it integration services for industrial control systems; house mark for well measurement and monitoring services for quality control in the oil and gas field; house mark for measurement and monitoring services for quality control of chemicals and petrochemicals
See 37 C.F.R. §2.65(a); TMEP §§715.03(a)(ii)(C), 718.02(a).
CONTACT INFORMATION
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
Applicant may view this notice and the previously issued final Office action in the Trademark Status and Document Retrieval (TSDR) system.
How to respond. Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).
/Christine Martin/
Examining Attorney
Law Office 104
571-272-1630
christine.martin@uspto.gov
RESPONSE GUIDANCE